Filewrapper® | A patent, trademark, and copyright law blog by MVS - Inequitable conducthttp://www.Filewrapper.com/index.cfm
News and Commentary from the world of Intellectual Property Law - The blawg of McKee, Voorhees &amp Sease, P.L.C.en-usTue, 31 Mar 2015 16:57:12-0500Mon, 25 Aug 2014 14:56:00-0500BlogCFChttp://blogs.law.harvard.edu/tech/rssFilewrapper@ipmvs.comFilewrapper@ipmvs.comMVS Filewrapper® Blog: Legitimate Advocacy and Genuine Misrepresentation of Material Factshttp://www.Filewrapper.com/index.cfm/2014/8/25/MVS-Filewrapper-Blog-Legitimate-Advocacy-and-Genuine-Misrepresentation-of-Material-Facts
<font face="Times New Roman" size="3"> </font><p style="margin: 0in 0in 0pt" class="MsoNormal"><font face="Times New Roman" size="3">The Federal Circuit has issued a decision in </font><a href="http://www.cafc.uscourts.gov/images/stories/opinions-orders/13-1674.Opinion.8-13-2014.1.PDF" target="_blank"><em><font face="Times New Roman" size="3" color="#0000ff">Apotex Inc. v. UCB, Inc.</font></em></a><font face="Times New Roman"><font size="3">, upholding a district court&#39;s finding that Apotex&#39;s U.S. Patent No. 6,767,556 (&quot;the &#39;556 patent&quot;) is unenforceable due to inequitable conduct.<span>&nbsp; </span></font></font></p><font face="Times New Roman" size="3"> </font><p style="margin: 0in 0in 0pt" class="MsoNormal"><font face="Times New Roman" size="3">&nbsp;</font></p><font face="Times New Roman" size="3"> </font><p style="margin: 0in 0in 0pt" class="MsoNormal"><span style="font-family: 'CenturySchoolbook','serif'"><font size="3">Dr. Sherman, founder and chairman of Apotex, wrote the &#39;556 patent application and is its sole inventor.<span>&nbsp; </span>The &#39;556 is based on Canadian application filed on April 5, 2000.<span>&nbsp; </span>The &rsquo;556 patent is generally directed to a process for manufacturing tablets of moexipril tablets&mdash;an angiotensin-converting enzyme (&ldquo;ACE&rdquo;) inhibitor used to treat hypertension. The &rsquo;556 patent discloses a process of making moexipril tablets consisting mostly of moexipril magnesium obtained by reacting moexipril or its acid addition salts with an alkaline magnesium compound to improve stability and prevent degradation of the normally instable moexipril hydrochloride.</font></span></p><font face="Times New Roman" size="3"> </font><p style="margin: 0in 0in 0pt" class="MsoNormal"><span style="font-family: 'CenturySchoolbook','serif'"><font size="3">&nbsp;</font></span></p><font face="Times New Roman" size="3"> </font><p style="margin: 0in 0in 0pt" class="MsoNormal"><span style="font-family: 'CenturySchoolbook','serif'"><font size="3">Two existing drugs&mdash; Univasc and Uniretic&mdash;were both cited as prior art in the prosecution of the &#39;556 patent, and were also asserted to infringe the &#39;556 patent after issuance.<span>&nbsp; </span>During prosecution, Dr. Sherman, through his patent attorney, asserted that the prior drugs did not render the invention of the &#39;556 patent obvious because the process for making them simply combined components, rather than reacting them.<span>&nbsp; </span>However, evidence presented at trial indicated that Dr. Sherman suspected that the existing drugs were made by the process recited in his application at the time the application was filed, and later conducted experiments to confirm that the components in those existing drugs were reacted, rather than simply combined as he represented to the PTO.<span>&nbsp; </span>The court also found that Dr. Sherman has misled or failed to inform a declarant, Dr. Lipp, regarding the true nature of the existing drugs in relation to the claimed invention, resulting in a declaration by Dr. Lipp that perpetuated Dr. Sherman&#39;s mischaracterizations of those existing drugs.<span>&nbsp; </span>In addition, the court determined that Dr. Sherman withheld relevant prior art from the PTO.<span>&nbsp; </span>The district court held the combined misrepresentations and withholdings were material to the prosecution of the &#39;556 patent, and that Dr. Sherman intended to deceive the PTO based on his overall pattern of misconduct, and therefore the &#39;556 patent was unenforceable due to inequitable misconduct.<span>&nbsp; </span></font></span></p><font face="Times New Roman" size="3"> </font><p style="margin: 0in 0in 0pt" class="MsoNormal"><span style="font-family: 'CenturySchoolbook','serif'"><font size="3">&nbsp;</font></span></p><font face="Times New Roman" size="3"> </font><p style="margin: 0in 0in 0pt" class="MsoNormal"><font size="3"><span style="font-family: 'CenturySchoolbook','serif'">On appeal, Dr. Sherman argued that the conduct before the PTO was merely advocating a particular interpretation of the prior art.<span>&nbsp; </span>However, the Federal Circuit determined that his statements were not mere advocacy for a preferred interpretation; his statements were factual in nature and contrary to the true information he had in his possession.<span>&nbsp; </span>The court clarified that there is no duty to disclose suspicions or beliefs regarding the prior art, and that there is nothing wrong with advocating, in good faith, a reasonable interpretation of the teachings of the prior art.<span>&nbsp; </span>However, affirmatively and knowingly misrepresenting material facts regarding the prior art goes beyond failing to disclose a personal belief or alternative interpretations of the prior art, and enters the realm of inequitable conduct, which may result in an unenforceable patent. </span></font></p><p style="margin: 0in 0in 0pt" class="MsoNormal">&nbsp;</p><p style="margin: 0in 0in 0pt" class="MsoNormal"><font size="3"><span style="font-family: 'CenturySchoolbook','serif'">The full opinion is available <a href="http://www.cafc.uscourts.gov/images/stories/opinions-orders/13-1674.Opinion.8-13-2014.1.PDF" target="_blank">here</a>. </span>&nbsp;</font></p><font face="Times New Roman" size="3"> </font><p style="margin: 0in 0in 0pt" class="MsoNormal"><font face="Times New Roman" size="3">&nbsp;</font></p><font face="Times New Roman" size="3"> </font>
ObviousnessFederal Circuit casesInequitable conductPatentsUSPTOMon, 25 Aug 2014 14:56:00-0500http://www.Filewrapper.com/index.cfm/2014/8/25/MVS-Filewrapper-Blog-Legitimate-Advocacy-and-Genuine-Misrepresentation-of-Material-FactsNew and Useful - January 23, 2013http://www.Filewrapper.com/index.cfm/2013/1/23/New-and-Useful--January-23-2013
<font face="Times New Roman" size="3"> </font><p style="margin: 0in 0in 0pt 0.5in; text-indent: -0.25in" class="MsoListParagraph"><span style="font-family: Symbol"><span><font size="3">&middot;</font><span style="font: 7pt/normal 'Times New Roman'; font-size-adjust: none; font-stretch: normal">&nbsp;&nbsp;&nbsp;&nbsp;&nbsp;&nbsp;&nbsp;&nbsp; </span></span></span><font size="3"><font face="Times New Roman">In <a href="http://www.cafc.uscourts.gov/images/stories/opinions-orders/12-1494.Opinion.1-7-2013.1.PDF">Wax v. Amazon Techs</a>., the Federal Circuit upheld the TTAB&rsquo;s denial of registration of the mark AMAZON VENTURES.<span>&nbsp; </span>Applicant filed and intent-to-use application to register the mark for &ldquo;investment management, raising venture capital for others, . . . and capital investment consultation.&rdquo;<span>&nbsp; </span>Amazon Technologies, Inc.&mdash;online retailer and owner of several AMAZON.COM marks&mdash;opposed the registration.<span>&nbsp; </span>The TTAB concluded that Amazon Technologies, Inc. had priority in the AMAZON.COM marks, and that there was a likelihood of confusion between Amazon Technologies&rsquo; marks and those of the applicant.<span>&nbsp; </span>The Applicant challenged the TTAB&rsquo;s findings that (1) Amazon Technologies&rsquo; marks are famous, (2) the similarity of Amazon Technologies&rsquo; mark to AMAZON VENTURES, and (3) the similarity of the parties&#39; services and channels of trade.<span>&nbsp; </span>The Federal Circuit confirmed the TTAB&rsquo;s findings, based in part on the wide latitude of protection afforded to Amazon Technologies&rsquo; on account of its fame within the buying public.<span>&nbsp;&nbsp;</span></font></font></p><p style="margin: 0in 0in 0pt 0.5in; text-indent: -0.25in" class="MsoListParagraph"><font face="Times New Roman" size="3"> </font></p><p style="margin: 0in 0in 0pt 0.5in; text-indent: -0.25in" class="MsoListParagraph"><span style="font-family: Symbol"><span><font size="3">&middot;</font><span style="font: 7pt/normal 'Times New Roman'; font-size-adjust: none; font-stretch: normal">&nbsp;&nbsp;&nbsp;&nbsp;&nbsp;&nbsp;&nbsp;&nbsp; </span></span></span><font size="3"><font face="Times New Roman">The Eighth Circuit Court of Appeals <a href="http://www.ca8.uscourts.gov/opns/opFrame.html">affirmed a district court&rsquo;s judgment and damages</a> for Hallmark Cards, Inc. against a former employee for breach of contract and misappropriation of trade secrets.<span>&nbsp; </span>The district court entered the jury&rsquo;s award of damages in the amount of $860,000.<span>&nbsp; </span>The Eight Circuit affirmed $735,000 of the damages as they related to breach of contract and disclosure of trade secrets, but overturned $125,000 the former employee earned in compensation from a competitor.<span>&nbsp; </span></font></font></p><p style="margin: 0in 0in 0pt 0.5in; text-indent: -0.25in" class="MsoListParagraph"><font face="Times New Roman" size="3"> </font></p><font face="Times New Roman" size="3"><p style="margin: 0in 0in 0pt 0.5in; text-indent: -0.25in" class="MsoListParagraphCxSpFirst"><span style="font-family: Symbol"><span>&middot;<span style="font: 7pt/normal 'Times New Roman'; font-size-adjust: none; font-stretch: normal">&nbsp;&nbsp;&nbsp;&nbsp;&nbsp;&nbsp;&nbsp;&nbsp; </span></span></span>The Federal Circuit has <a href="http://www.cafc.uscourts.gov/images/stories/opinions-orders/11-1621.pdf">dismissed as moot an appeal from a patent infringement suit</a>.<span>&nbsp; </span>Allflex U.S.A., Inc. sued Avid Identification Systems, Inc. seeking a declaratory judgment that six of Avid&rsquo;s patents were unenforceable due to inequitable conduct.<span>&nbsp; </span>The district court granted partial summary judgment in favor of Allflex, at which time the parties entered into a settlement agreement that resolved all of the claims and issues between the parties upon payment of $6.55 million from Avid to Allflex, except for a provision that allowed Avid to appeal three specific issues.<span>&nbsp; </span>The agreement further provided that Allflex could contest any appeal on the merits, but could not dispute the existence of a live case or controversy, and that if Avid were successful on any issue on appeal, the payment to Allflex would be reduced by $50,000.<span>&nbsp; </span>The district court accepted the settlement agreement and entered a stipulated order of final judgment that stated the case was dismissed with prejudice with the exception of findings the court considered &ldquo;final and ripe for appellate review.&rdquo;<span>&nbsp; </span>Avid then appealed to the Federal Circuit, but Allflex declined to file a brief defending the judgment of the district court.<span>&nbsp; </span></p><p style="margin: 0in 0in 0pt 0.5in" class="MsoListParagraphCxSpMiddle">The Federal Circuit concluded that the appeal was moot.<span>&nbsp; </span>Avid argued that, although the case would be moot if it were not for the $50,000 contingency payment, that payment ensured that there was a real controversy between the parties.<span>&nbsp; </span>The court dismissed Avid&rsquo;s argument, concluding that while the district court&rsquo;s decision was effectively final and therefore appealable, Allflex no longer had a legally cognizable interest in any of the issues in the case, and the payment was insufficient to create any interest </p><p style="margin: 0in 0in 0pt 0.5in; text-indent: -0.25in" class="MsoListParagraphCxSpFirst"><span style="font-family: Symbol"><span>&middot;<span style="font: 7pt/normal 'Times New Roman'; font-size-adjust: none; font-stretch: normal">&nbsp;&nbsp;&nbsp;&nbsp;&nbsp;&nbsp;&nbsp;&nbsp; </span></span></span>The USPTO has <a href="https://www.federalregister.gov/articles/2013/01/18/2013-00819/setting-and-adjusting-patent-fees">announced the new fee schedule</a>.<span>&nbsp; </span>The changes, initiated under the Leahy-Smith America Invents Act, are set to take effect March 19, 2013.<span>&nbsp; </span>Among the notable changes are:</p><p style="margin: 0in 0in 0pt 1in; text-indent: -0.25in" class="MsoListParagraphCxSpMiddle"><span style="font-family: 'Courier New'"><span>o<span style="font: 7pt/normal 'Times New Roman'; font-size-adjust: none; font-stretch: normal">&nbsp;&nbsp; </span></span></span>A 75% reduction in most fees for micro entities, including Universities.</p><p style="margin: 0in 0in 0pt 1in; text-indent: -0.25in" class="MsoListParagraphCxSpMiddle"><span style="font-family: 'Courier New'"><span>o<span style="font: 7pt/normal 'Times New Roman'; font-size-adjust: none; font-stretch: normal">&nbsp;&nbsp; </span></span></span>Increase in basic filing fee:<span>&nbsp; </span>$1,600 (large entity); $800 (small entity); $400 (micro entity)</p><p style="margin: 0in 0in 0pt 1in; text-indent: -0.25in" class="MsoListParagraphCxSpMiddle"><span style="font-family: 'Courier New'"><span>o<span style="font: 7pt/normal 'Times New Roman'; font-size-adjust: none; font-stretch: normal">&nbsp;&nbsp; </span></span></span>Increase in appeal fees, due in large part to a new &ldquo;Appeal Forwarding Fee for Appeal in Examination or <em>Ex Parte</em> Reexamination Proceeding or Filing a Brief in Support of an Appeal in <em>Inter Partes</em> Reexamination&rdquo;:<span>&nbsp; </span>$2,800 (large entity); $1,400 (small entity); $700 (micro entity)</p><p style="margin: 0in 0in 0pt 1in; text-indent: -0.25in" class="MsoListParagraphCxSpMiddle"><span style="font-family: 'Courier New'"><span>o<span style="font: 7pt/normal 'Times New Roman'; font-size-adjust: none; font-stretch: normal">&nbsp;&nbsp; </span></span></span>Decrease in issue fees:<span>&nbsp; </span>$960 (large entity); $480 (small entity); $240 (micro entity)</p><p style="margin: 0in 0in 0pt 1in; text-indent: -0.25in" class="MsoListParagraphCxSpMiddle"><span style="font-family: 'Courier New'"><span>o<span style="font: 7pt/normal 'Times New Roman'; font-size-adjust: none; font-stretch: normal">&nbsp;&nbsp; </span></span></span>Increase in maintenance fees:</p><p style="margin: 0in 0in 0pt 1.5in; text-indent: -0.25in" class="MsoListParagraphCxSpMiddle"><span style="font-family: Wingdings"><span>&sect;<span style="font: 7pt/normal 'Times New Roman'; font-size-adjust: none; font-stretch: normal">&nbsp; </span></span></span>First (3.5 years):<span>&nbsp; </span>$1,600 (large entity); $800 (small entity); $400 (micro entity)</p><p style="margin: 0in 0in 0pt 1.5in; text-indent: -0.25in" class="MsoListParagraphCxSpMiddle"><span style="font-family: Wingdings"><span>&sect;<span style="font: 7pt/normal 'Times New Roman'; font-size-adjust: none; font-stretch: normal">&nbsp; </span></span></span>Second (7.5 years):<span>&nbsp; </span>$3,600; $1,800; $900</p><p style="margin: 0in 0in 0pt 1.5in; text-indent: -0.25in" class="MsoListParagraphCxSpMiddle"><span style="font-family: Wingdings"><span>&sect;<span style="font: 7pt/normal 'Times New Roman'; font-size-adjust: none; font-stretch: normal">&nbsp; </span></span></span>Third (11.5 years):<span>&nbsp; </span>$7,400; $3,700; $1,850</p><p style="margin: 0in 0in 0pt 1in; text-indent: -0.25in" class="MsoListParagraphCxSpLast"><span style="font-family: 'Courier New'"><span>o<span style="font: 7pt/normal 'Times New Roman'; font-size-adjust: none; font-stretch: normal">&nbsp;&nbsp; </span></span></span>Decrease in supplemental examination fees:<span>&nbsp; </span>$16,500 (large entity); $8,250 (small entity); $4,125 (micro entity)</p><p style="margin: 0in 0in 0pt 0.5in" class="MsoNormal">The complete finalized rules are available <a href="https://www.federalregister.gov/articles/2013/01/18/2013-00819/setting-and-adjusting-patent-fees">here</a>. </p></font><font face="Times New Roman" size="3"> </font>
Federal Circuit casesNewsInequitable conductLegislationDamagesStandingCivil procedureUSPTOWed, 23 Jan 2013 09:10:00-0500http://www.Filewrapper.com/index.cfm/2013/1/23/New-and-Useful--January-23-2013Federal Circuit Establishes New Standard for Inequitable Conducthttp://www.Filewrapper.com/index.cfm/2011/6/15/Federal-Circuit-Establishes-New-Standard-for-Inequitable-Conduct
On May 25, 2011 the Federal Circuit released its en banc decision in <a href="http://www.cafc.uscourts.gov/opinions-orders/30/100/all/page-21-5.html" target="_blank"><em>Theresense, Inc. v. Becton, Dickinson &amp; Co.</em></a> , in which the Court articulated the appropriate standard for inequitable conduct before the PTO.&nbsp; The majority wrote, &ldquo;[t]his court now tightens the standards for finding both intent and materiality in order to redirect a doctrine that has been overused to the detriment of the public.&rdquo; &nbsp;<br /><br /><u>Majority</u><br /><br />At issue in the district court was the 5,820,551 patent which involved disposable blood glucose test strips for diabetes management.&nbsp; Protective membranes are often used on such glucose test strips to protect the veracity of the results.&nbsp; The &lsquo;551 patent disclosed a test unit without a protective membrane.&nbsp; The Examiner cited the 4,545,382 patent, also held by Abbott, as disclosing a unit which could be used without a membrane.&nbsp; A declaration and affidavit was submitted explaining the language of the &lsquo;382 patent would not encourage one of ordinary skill in the art to use the device without a membrane, and the Examiner relied upon the statements for allowance of the &lsquo;551 patent.&nbsp; It came to light during litigation that Abbott had previously made representations to the European Patent Office that, in fact, &ldquo;[the] disclosure was unequivocally clear:&rdquo; the membrane of the &lsquo;382 patent was optional.&nbsp; At the district court level, claims 1&ndash;4 of the &lsquo;551 patent were held invalid as obvious and the &lsquo;551 patent was held unenforceable due to inequitable conduct. &nbsp;<br /><br />The majority undertook a discussion of the <em>Keystone</em>, <em>Hazel-Atlas</em>, and <em>Precision</em> cases which set forth the test for unclean hands, the precursor to inequitable conduct.&nbsp; The Court continued, discussing the ways in which the inequitable conduct doctrine diverged from these original cases, expanding to include a broader scope of misconduct&mdash;&ldquo;mere non-disclosure&rdquo; to the PTO&mdash;and by adopting a more potent remedy&mdash;unenforceability of the entire patent.&nbsp; This lead to the sliding scale test, the &ldquo;reasonable examiner standard&rdquo; and the standards articulated in 37 C.F.R. 1.56.<br /><br />The Court continued, noting that these standards lack uniformity and encourage the use of the &ldquo;atomic bomb&rdquo; of patent law.&nbsp; &ldquo;Left unfettered, the inequitable conduct doctrine has plagued not only the courts but also the entire patent system.&rdquo;&nbsp; The Court then proceeded to &ldquo;tighten the standard.&rdquo;&nbsp; For purposes of the intent prong, the Court held, &ldquo;the accused infringer must show the patentee acted with the specific intent to deceive the PTO.&rdquo;&nbsp; This requires &ldquo;clear and convincing evidence must show that the applicant made a deliberate decision to withhold a known material reference.&rdquo;&nbsp; No longer will the &ldquo;should have known&rdquo; analysis satisfy this standard.&nbsp;&nbsp; Finally, the absence of a good faith explanation does not, by itself, prove the intent to deceive.&nbsp; With respect to the materiality prong, the Court articulated a &ldquo;but for&rdquo; materiality standard.&nbsp; Thus, &ldquo;when an applicant fails to disclose prior art to the PTO, that prior art is but-for material if the PTO would not have allowed a claim had it been aware of the undisclosed prior art.&rdquo;&nbsp; Important to note, the decision articulates a preponderance of the evidence standard for the &ldquo;but for&rdquo; test, which is different than the clear and convincing evidence standard required for invalidity.&nbsp; Finally the court notes an exception to the &ldquo;but for&rdquo; test&mdash;in cases of &ldquo;affirmative egregious misconduct,&rdquo; the materiality prong may also be satisfied.&nbsp; The Court vacated the finding of materiality at the district court and remanded for application of the new test:<br /><br />1.&nbsp;&nbsp; &nbsp;Intent:&nbsp; clear and convincing evidence must show that the applicant made a deliberate decision to withhold a known material reference.<br />2.&nbsp;&nbsp; &nbsp;Materiality:&nbsp; preponderance of the evidence must show that the PTO would not have allowed a claim had it been aware of the undisclosed prior art&mdash;&ldquo;but for&rdquo; test.<br />a.&nbsp;&nbsp; &nbsp;Exception:&nbsp; affirmative egregious misconduct.<br /><br /><u>Concurrence</u><br /><br />&nbsp;&nbsp; &nbsp;The concurring opinion criticizes both the majority and the dissent for as sacrificing flexibility for rigidity.&nbsp; The concurrence agrees with the majorities overall holding, but wishes to respect the equitable nature of the test.&nbsp; This means leaving the decision of inequitable conduct to the decision of the lower courts.&nbsp; The opinion notes this would help in the instance there is some intentional misconduct which does not fit within the rigid test, yet still warrants equitable relief.&nbsp; This includes allowing the district court to &ldquo;fashion some other reasonable remedy, so long as the remedy imposed by the court is &lsquo;commensurate with the violation.&rsquo;&rdquo;&nbsp; The concurrence articulates a materiality test including:<br /><br />1.&nbsp;&nbsp; &nbsp;But for the conduct (whether it be in the form of affirmative act or intentional non-disclosure), the patent would not have issued (as Chief Judge Rader explains in the majority opinion);<br />2.&nbsp;&nbsp; &nbsp;The conduct constitutes a false or misleading representation of fact (rendered so either because the statement made is false on its face or information is omitted which, if known, would render the representation false or misleading); or<br />3.&nbsp;&nbsp; &nbsp;The district court finds that the behavior is so offensive that the court is left with a firm conviction that the integrity of the PTO process as to the application at issue was wholly undermined.<br /><br /><u>Dissent</u><br /><br />&nbsp;&nbsp; &nbsp;The dissent begins by noting that the &ldquo;specific intent,&rdquo; as articulated by the majority and the clear and convincing evidence standard.&nbsp; The disagreement revolves around the materiality standard.&nbsp; The dissent would prefer to continue to apply the standard as articulated in 37 C.F.R. 1.56 because &ldquo;[f]irst, examiners need to conduct effective and efficient examinations, i.e., what information is material to the examination process.&nbsp; Second, the higher standard of materiality adopted by the majority will not provide appropriate incentives for patent applicants to comply with the disclosure obligation the PTO places on them.&rdquo;&nbsp; Essentially, the dissent would re-affirm the standard articulated in <em>Kingsdown Medical</em>.&nbsp; The test from the dissent would require:<br /><br />1.&nbsp;&nbsp; &nbsp;Inequitable conduct requires proof, by clear and convincing evidence, that the applicant or attorney intended to misled the PTO with respect to the material matter.<br />2.&nbsp;&nbsp; &nbsp;Materiality is measured by what the PTO demands of those who apply for and prosecute patent applications.&nbsp; The disclosure standard for the PTO expects those parties to comply with is set forth in the current version of the PTO&rsquo;s Rule 56.&nbsp; Under that standard, inequitable conduct requires proof that the information at issue either established, by itself or in combination with other information, a prima facie case of unpatentability, or was inconsistent with a position taken by the applicant before the PTO with respect to patentability.<br />3.&nbsp;&nbsp; &nbsp;Intent to mislead and materiality must be separately proved.&nbsp; There is no &ldquo;sliding scale&rdquo; under which the degree of intent that must be proved depends on the strength of the showing as to the materiality of the information at issue.<br /><br />The dissent continues, describing the veracity of such a test for policy reasons and for reasons of deference to the PTO.&nbsp; Further, the dissent articulates this standard as more historically accurate with the&nbsp; <em>Keystone</em>, <em>Hazel-Atlas</em>, and <em>Precision</em> cases.&nbsp; The dissent describes the majority test as &ldquo;Draconian&rdquo; and inappropriate within the context of history, precedent, and the public policy consideration of the inequitable conduct doctrine.<br /><br />For the full opinion, click <a href="http://www.cafc.uscourts.gov/opinions-orders/30/100/all/page-21-5.html" target="_blank">here</a> .
Federal Circuit casesInequitable conductWed, 15 Jun 2011 14:24:00-0500http://www.Filewrapper.com/index.cfm/2011/6/15/Federal-Circuit-Establishes-New-Standard-for-Inequitable-ConductFederal Circuit to consider overhaul of inequitable conduct standards en banchttp://www.Filewrapper.com/index.cfm/2010/4/26/Federal-Circuit-to-consider-overhaul-of-inequitable-conduct-standards-en-banc
<p>In an order today, the <a href="http://www.cafc.uscourts.gov" title="United States Court of Appeals for the Federal Circuit">Federal Circuit</a> granted rehearing <em>en banc </em>in <em>Therasense, Inc. v. Becton, Dickinson &amp; Co.</em>&nbsp; The order indicates the court will be reconsidering its precedent on virtually the entire gamut of issues relating to inequitable conduct. Specifically, the questions presented are:</p><ol><li>Should the materiality-intent-balancing framework for inequitable conduct be modified or replaced?</li><li>If so, how? In particular, should the standard be tied directly to fraud or unclean hands? <em>See Precision Instrument Mfg. Co. v. Auto. Maint. Mach. Co.</em>, 324 U.S. 806 (1945); <em>Hazel-Atlas Glass Co. v. Hartford-Empire Co.</em>, 322 U.S. 238 (1944), <em>overruled on other grounds by</em> <em>Standard Oil Co. v. United States</em>, 429 U.S. 17 (1976); <em>Keystone Driller Co. v. Gen. Excavator Co.</em>, 290 U.S. 240 (1933). If so, what is the appropriate standard for fraud or unclean hands?</li><li>What is the proper standard for materiality? What role should the United States Patent and Trademark Office&#39;s rules play in defining materiality? Should a finding of materiality require that but for the alleged misconduct, one or more claims would not have issued?</li><li>Under what circumstances is it proper to infer intent from materiality? <em>See Kingsdown Med. Consultants, Ltd. v. Hollister Inc.</em>, 863 F.2d 867 (Fed. Cir. 1988) (<em>en banc</em>).</li><li>Should the balancing inquiry (balancing materiality and intent) be abandoned?</li><li>Whether the standards for materiality and intent in other federal agency contexts or at common law shed light on the appropriate standards to be applied in the patent context. <br /></li></ol><p>The court explicitly allows for the filing of <em>amicus</em> briefs without leave of court, and also specifically invites the <a href="http://www.uspto.gov/" title="United States Patent and Trademark Office">USPTO</a> to file such a brief. </p><p>For the order granting rehearing <em>en banc</em>, click <a href="http://www.cafc.uscourts.gov/opinions/08-1511o.pdf" target="_blank">here</a>. </p><p>For the original panel opinion (affirming the district court&#39;s finding of inequitable conduct), click <a href="http://www.cafc.uscourts.gov/opinions/08-1511.pdf" target="_blank">here</a>. </p><p>More detail of the original panel opinion after the jump.</p><p>
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En bancFederal Circuit casesInequitable conductMon, 26 Apr 2010 13:09:00-0500http://www.Filewrapper.com/index.cfm/2010/4/26/Federal-Circuit-to-consider-overhaul-of-inequitable-conduct-standards-en-bancDisclosure of compounds without link to claimed method fails to meet written description requirementhttp://www.Filewrapper.com/index.cfm/2009/4/14/Disclosure-of-compounds-without-link-to-claimed-method-fails-to-meet-written-description-requirement
In a recent decision, the <a href="http://www.cafc.uscourts.gov/" title="United States Court of Appeals for the Federal Circuit">Federal Circuit</a> reversed a district court&#39;s denial of judgment as a matter of law after a jury determined the asserted claims of an invention were not invalid under the written description requirement.&nbsp; The court, however, affirmed the district court&#39;s determination of no inequitable conduct.<br /><br />The Federal Circuit held the jury lacked substantial evidence for its verdict.&nbsp; Specifically, the court noted that vague functional descriptions are essentially invitations for skilled artisans to conduct further research and therefore are not sufficient description to meet the written description requirement of <a href="http://www.law.cornell.edu/uscode/html/uscode35/usc_sec_35_00000112----000-.html" title="35 U.S.C. 112">&sect; 112</a>.&nbsp; The specification disclosed three classes of compounds that could be used in the claimed methods.&nbsp; However, it only disclosed specific examples of one of the classes of compounds, and did not disclose any examples of the described compounds actually linked to use in the claimed method.&nbsp; The patentee was further hampered in that the jury held the patent was entitled to a priority date of 1989, but most of the patentee&#39;s testimony and other evidence regarding the written description issue centered on the application&#39;s filing date in 1991.&nbsp; The court held none of this evidence could support the jury&#39;s verdict, as it was directed to the wrong timeframe.&nbsp; Therefore, the court held the written description requirement not met, and the asserted claims invalid.<br /><br />The court affirmed the district court&#39;s holding of no inequitable conduct.&nbsp; Neither party contested the relevant acts (failing to correct a figure and to disclose certain non-prior art references that were relevant to patentability) were properly held material.&nbsp; The Federal Circuit agreed with the district court that there was insufficient evidence of intent to deceive to support a finding of inequitable conduct. <br /><br />More on <em>Ariad Pharms., Inc. v. Eli Lilly &amp; Co.</em> after the jump.<br /><br />
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Written descriptionFederal Circuit casesInequitable conductTue, 14 Apr 2009 10:24:00-0500http://www.Filewrapper.com/index.cfm/2009/4/14/Disclosure-of-compounds-without-link-to-claimed-method-fails-to-meet-written-description-requirementFailure to raise KSR post-trial but pre-judgment results in waiverhttp://www.Filewrapper.com/index.cfm/2009/3/5/Failure-to-raise-KSR-posttrial-but-prejudgment-results-in-waiver
<p>In a recent decision, the <a href="http://www.cafc.uscourts.gov/" title="United States Court of Appeals for the Federal Circuit">Federal Circuit</a> affirmed a jury&#39;s verdict of infringement, no obviousness, and no inequitable conduct.&nbsp; On appeal, the defendant for the first time argued the jury&#39;s verdict should be reversed in light of <a href="http://www.filewrapper.com/index.cfm/2007/4/30/Initial-thoughts-on-KSR-v-Teleflex" title="KSR Int'l Co. v. Teleflex, Inc."><em>KSR</em></a>.&nbsp; </p><p>The <a href="http://www.cafc.uscourts.gov/" title="United States Court of Appeals for the Federal Circuit">Federal Circuit</a> held the argument had been waived.&nbsp; The jury reached its verdict on December 8, 2006.&nbsp; Post-trial motions were fully briefed on February 20, 2007, and <a href="http://www.filewrapper.com/index.cfm/2007/4/30/Initial-thoughts-on-KSR-v-Teleflex" title="KSR Int'l Co. v. Teleflex, Inc."><em>KSR</em></a> was decided on April 30, 2007.&nbsp; However, the district court did not rule on the post-trial motions until August 23, 2007, and final judgment was not entered until August 24.&nbsp; Given the four month gap between the decision in <a href="http://www.filewrapper.com/index.cfm/2007/4/30/Initial-thoughts-on-KSR-v-Teleflex" title="KSR Int'l Co. v. Teleflex, Inc."><em>KSR</em></a> and the rulings on the post-trial motions, the Federal Circuit held the defendant was required to raise the issue before the district court.&nbsp; As a result, the court considered the argument waived.</p><p>The <a href="http://www.cafc.uscourts.gov/" title="United States Court of Appeals for the Federal Circuit">Federal Circuit</a> also rejected the defendant&#39;s arguments regarding noninfringement and inequitable conduct. </p><p>More detail of <em>Rentrop v. Spectranetics Corp.</em> after the jump.</p><p>
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ObviousnessFederal Circuit casesInequitable conductLiteral infringementThu, 05 Mar 2009 17:26:00-0500http://www.Filewrapper.com/index.cfm/2009/3/5/Failure-to-raise-KSR-posttrial-but-prejudgment-results-in-waiverHigh materiality without explanation for nondisclosure leads to inference of intent to deceivehttp://www.Filewrapper.com/index.cfm/2008/10/17/High-materiality-without-explanation-for-nondisclosure-leads-to-inference-of-intent-to-deceive
<p>In a recent decision, the <a href="http://www.cafc.uscourts.gov/" title="United States Court of Appeals for the Federal Circuit">Federal Circuit</a> affirmed a district court&#39;s finding of inequitable conduct for one patent but reversed on a second, affirmed a finding of no invalidity of the second patent, but vacated the finding of infringement after modifying the district court&#39;s claim construction of a claim term.&nbsp; The court also reversed the finding of indefiniteness of a third patent.</p><p>The court continued its recent discussions of when (if ever) an inference of intent to deceive is permissible to support an inequitable conduct finding where there is no independent evidence of such intent.&nbsp; Here, the majority affirmed the district court&#39;s inference of intent based on high materiality, proof of knowledge of the withheld art, and a lack of credible explanation for the nondisclosure.&nbsp; <a href="http://www.cafc.uscourts.gov/judgbios.html#Lourie">Judge Lourie</a> dissented, arguing the majority conflated intent with materiality.&nbsp; Given the <a href="http://www.filewrapper.com/index.cfm/2008/9/10/No-evidence-of-intent-to-deceive-no-inequitable-conduct">apparent</a> <a href="http://www.filewrapper.com/index.cfm/2008/5/14/Finding-of-inequitable-conduct-affirmed-Judge-Rader-expresses-concern-over-resurgence-of-defense">disagreement</a>&nbsp; on <a href="http://www.filewrapper.com/index.cfm/2008/1/28/Disclosure-of-prior-art-abstract-only-when-more-relevant-detail-known-results-in-inequitable-conduct">this issue</a>, a case presenting the issue of when (or whether) such an inference is permissible seems to be a candidate for <em>en banc</em> review.</p><p>More detail of <em>Praxair, Inc. v. ATMI, Inc.</em> after the jump.</p><p>
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Federal Circuit casesIndefinitenessClaim constructionInequitable conductInjunctionsFri, 17 Oct 2008 10:59:00-0500http://www.Filewrapper.com/index.cfm/2008/10/17/High-materiality-without-explanation-for-nondisclosure-leads-to-inference-of-intent-to-deceiveNo evidence of intent to deceive, no inequitable conducthttp://www.Filewrapper.com/index.cfm/2008/9/10/No-evidence-of-intent-to-deceive-no-inequitable-conduct
<p>In a recent decision, the <a href="http://www.cafc.uscourts.gov/" title="United States Court of Appeals for the Federal Circuit">Federal Circuit</a> reversed a district court&#39;s grant of summary judgment of inequitable conduct against the patentee.&nbsp; At issue was whether the patentee&#39;s failure to disclose a letter describing an aspect of the prior art constituted inequitable conduct.&nbsp; The court reversed finding that the alleged infringer had failed to provide sufficient facts to support an inference of intent to deceive.<br /><br />The defendant&#39;s theory involved a plan by the patentee to switch law firms once it appeared the first firm intended to disclose the letter, and preventing the second firm from discovering the existence of the letter.&nbsp; The opinion provided a clear look of how the Federal Circuit will analyze inequitable conduct.&nbsp; The court teed up its analysis by stating:</p><blockquote>To successfully prove inequitable conduct, the accused infringer must present &quot;evidence that the applicant (1) made an affirmative misrepresentation of material fact, failed to disclose material information, or submitted false material information, and (2) intended to deceive the [PTO].&quot;&nbsp; Further, at least a threshold level of each element -- i.e., both materiality and intent to deceive -- must be proven by clear and convincing evidence.&nbsp; And even if this elevated evidentiary burden is met as to both elements, the district court must still balance the equities to determine whether the applicant&#39;s conduct before the PTO was egregious enough to warrant holding the entire patent unenforceable.&nbsp; Thus, even if a threshold level of both materiality and intent to deceive are proven by clear and convincing evidence, the court may still decline to render the patent unenforceable.<br /></blockquote><p>Most important to the court was that an accused infringer proves threshold levels of intent to deceive the PTO and materiality with clear and convincing evidence. The clear and convincing standard requires that the evidence be strong enough to show that an inference of intent to deceive is the &quot;single most reasonable inference able to be drawn from the evidence.&quot;&nbsp; In this case, there was simply &quot;no evidence, direct or indirect,&quot; to support the inference the defendant sought to draw.&nbsp; As a result, the finding of inequitable conduct was reversed.<br /><br />More on <em>Star Scientific, Inc. v. R.J. Reynolds Tobacco Co.</em> after the jump.</p><p>
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Federal Circuit casesIndefinitenessInequitable conductWed, 10 Sep 2008 09:04:00-0500http://www.Filewrapper.com/index.cfm/2008/9/10/No-evidence-of-intent-to-deceive-no-inequitable-conductFinding of inequitable conduct without considering materiality vacatedhttp://www.Filewrapper.com/index.cfm/2008/8/6/Finding-of-inequitable-conduct-without-considering-materiality-vacated
<p>In a decision on Friday, the <a href="http://www.cafc.uscourts.gov/" title="United States Court of Appeals for the Federal Circuit">Federal Circuit</a> reversed a district court&#39;s summary judgment of invalidity and noninfringement and subsequent finding of inequitable conduct.&nbsp; The court also vacated the district court&#39;s exceptional case finding and the associated award of attorney&#39;s fees.<br /><br />The plaintiff was initially awarded partial summary judgment of infringement of six patents.&nbsp; The district judge then assigned a special master to examine the remaining issues in the case, including invalidity and inequitable conduct.&nbsp; The case was then transferred to a new judge who, without written opinion, overturned the plaintiff&#39;s ruling of summary judgment and awarded partial summary judgment of noninfringment and invalidity.&nbsp; The judge then held a brief bench trial on the issue of inequitable conduct, where the plaintiff was only allowed to present inventor testimony regarding candor and good faith; all evidence of materiality was precluded.&nbsp; After this trail, the court, from the bench, made a ruling of inequitable conduct against the plaintiff, ruled the case was exceptional under <a href="http://www.law.cornell.edu/uscode/search/display.html?terms=285&amp;url=/uscode/html/uscode35/usc_sec_35_00000285----000-.html" title="35 U.S.C. 285">&sect; 285</a>, and awarded attorney&#39;s fees.<br /><br />The Federal Circuit reversed, vacated, or remanded every ruling made by the trial court.&nbsp; Specifically, the court held that in order to support a finding of inequitable conduct, there must be threshold findings of both materiality and intent to deceive.&nbsp; Here, the district court only examined intent, rendering the record insufficient to support a holding of inequitable conduct.&nbsp; The court also held the district court&#39;s findings regarding intent to deceive were clearly erroneous.&nbsp; On top of that, the court held the summary judgment rulings &quot;lack[ed] findings for judicial review,&quot; and that &quot;the record show[ed] many potential issues of fact that would prevent entry of summary judgment.&quot;&nbsp; Given the district judge&#39;s handling of the case, the court further ordered the case reassigned to a new trial judge on remand.<br /><br />More on <em>Research Corp. Tech., Inc. v. Microsoft Corp.</em> after the jump.<br /><br />
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AnticipationWritten descriptionAttorney fees/exceptional casesFederal Circuit casesInequitable conductWed, 06 Aug 2008 09:51:00-0500http://www.Filewrapper.com/index.cfm/2008/8/6/Finding-of-inequitable-conduct-without-considering-materiality-vacatedFederal Circuit provides more post-KSR guidance for obviousness for chemical compoundshttp://www.Filewrapper.com/index.cfm/2008/7/24/Federal-Circuit-provides-more-postKSR-guidance-for-obviousness-for-chemical-compounds
<p>In a decision Monday, the <a href="http://www.cafc.uscourts.gov/" title="United States Court of Appeals for the Federal Circuit">Federal Circuit</a> affirmed a district court&#39;s decision finding asserted claims of a patent valid and enforceable.&nbsp; Specifically, the court affirmed a finding that the asserted claims were nonobvious as a matter of law, and that the evidence did not support a finding of inequitable conduct. &nbsp;<br /><br />The <a href="http://www.cafc.uscourts.gov/" title="United States Court of Appeals for the Federal Circuit">Federal Circuit</a>, applying <a href="http://www.filewrapper.com/index.cfm/2007/4/30/Initial-thoughts-on-KSR-v-Teleflex"><em>KSR Int&#39;l Co. v. Teleflex Inc.</em></a> in the context of similarly-structured chemical compounds stated: &quot;[P]ost-<em>KSR</em>, a prima facie case of obviousness for a chemical compound still, in general, begins with the reasoned identification of a lead compound.&quot;&nbsp; In this case, because there was no adequate explanation for why the defendant&#39;s asserted &quot;lead compound&quot; would actually be used by one of ordinary skill in the art, the patent was not shown to be obvious.<br /><br />The defendants also brought several accusations of inequitable conduct, the court found none of them to be persuasive.&nbsp; The court held that in order to have a finding of inequitable conduct there must be a clear intent to deceive the Examiner and this is a very high standard.&nbsp; In this case, some questionable conduct had occurred, but ultimately the court said it was clear that no intent to deceive had existed.&nbsp; Therefore, no inequitable conduct had occurred. &nbsp;<br /><br />More on <em>Eisai Co. v. Dr. Reddy&#39;s Labs., Ltd.</em> after the jump.<br /><br />
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ObviousnessFederal Circuit casesInequitable conductThu, 24 Jul 2008 11:46:00-0500http://www.Filewrapper.com/index.cfm/2008/7/24/Federal-Circuit-provides-more-postKSR-guidance-for-obviousness-for-chemical-compoundsFailure to consider evidence of good faith leads to reversal of inequitable conduct findinghttp://www.Filewrapper.com/index.cfm/2008/6/25/Failure-to-consider-evidence-of-good-faith-leads-to-reversal-of-inequitable-conduct-finding
<p>In a decision last week, the <a href="http://www.cafc.uscourts.gov/" title="United States Court of Appeals for the Federal Circuit">Federal Circuit</a> affirmed a district court&#39;s finding of no infringement and invalidity for obviousness, and reversed the district court&#39;s finding of unenforceability due to inequitable conduct.<br /><br />The Federal Circuit, citing <a href="http://www.filewrapper.com/index.cfm/2007/4/30/Initial-thoughts-on-KSR-v-Teleflex" title="KSR v. Teleflex"><em>KSR</em></a>, noted that an obviousness analysis can take account the inferences and creative steps that a person of ordinary skill in the art would employ, and held that there was a only small logical gap between the prior art and the claim at issue that could be closed by a person of ordinary skill in the art pursuing known options within his or her technical grasp and therefore the claim was obvious. &nbsp;<br /><br />Regarding inequitable conduct, the court reaffirmed that intentionally misleading or false statements made in a petition to make special can lead to a finding of unenforceability, even if the statements do not relate to the patentability of the invention, as long as the false statement succeeds in obtaining expedited review of the application.&nbsp; Here, however, the evidence was just as susceptible to the inference that intentional misrepresentations occurred as to the inference that the statements were either innocent, not misleading, or both.&nbsp; As stated by the court:&nbsp; </p><blockquote>Whenever evidence proffered to show either materiality or intent is susceptible of multiple reasonable inferences, a district court clearly errs in overlooking one inference in favor of another equally reasonable inference.&nbsp; All reasonable inferences must be drawn from the evidence, and a judgment then rendered on the evidence as informed by the range of reasonable inferences.<br /></blockquote>Here, the district court clearly erred because it failed to give due weight to evidence of good faith that would call for inferences contrary to a finding of deceit.&nbsp; As a result, the finding of inequitable conduct was reversed.&nbsp; The district court also affirmed the finding of noninfringement.<br /><br />More detail of <em>Scanner Tech. Corp. v. ICOS Vision Sys. Corp.</em> after the jump.<br /><br />
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Attorney fees/exceptional casesFederal Circuit casesObviousnessInequitable conductLiteral infringementWed, 25 Jun 2008 13:37:00-0500http://www.Filewrapper.com/index.cfm/2008/6/25/Failure-to-consider-evidence-of-good-faith-leads-to-reversal-of-inequitable-conduct-findingFinding of inequitable conduct affirmed, Judge Rader expresses concern over resurgence of defensehttp://www.Filewrapper.com/index.cfm/2008/5/14/Finding-of-inequitable-conduct-affirmed-Judge-Rader-expresses-concern-over-resurgence-of-defense
In a decision today, the <a href="http://www.cafc.uscourts.gov">Federal Circuit</a> affirmed a district court&#39;s finding of inequitable conduct resulting from <a href="http://www.uspto.gov/web/offices/pac/mpep/documents/0700_716.htm">Rule 132 declarations</a> that were used to overcome obviousness and anticipation rejections. The declarations used a difference in <a href="http://en.wikipedia.org/wiki/Biological_half-life">half-lives</a> to distinguish the claimed composition over the prior art, however, it failed to indicate that the comparative half-lives were calculated using different initial dosages. The court determined that, despite having the underlying raw data before the examiner, the failure to explicitly indicate the difference was sufficient to support the finding of inequitable conduct.<p> <a href="http://www.cafc.uscourts.gov/judgbios.html#Rader">Judge Rader</a> filed a dissent focusing on a resurgence of the inequitable conduct defense and suggested the court revisit and reinvigorate the holding in <em>Kingsdown</em> which stemmed the earlier &quot;plague&quot; of inequitable conduct claims. </p><p> More detail of <em>Aventis Pharma S.A. v. Amphastar Pharms., Inc.</em> after the jump.</p><p>
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Federal Circuit casesInequitable conductWed, 14 May 2008 16:00:00-0500http://www.Filewrapper.com/index.cfm/2008/5/14/Finding-of-inequitable-conduct-affirmed-Judge-Rader-expresses-concern-over-resurgence-of-defenseLicense under method patent not limited to use with licensor's products absent express limitationhttp://www.Filewrapper.com/index.cfm/2008/4/18/License-under-method-patent-not-limited-to-use-with-licensors-products-absent-express-limitation
<p>In a decision Wednesday, the <a href="http://www.cafc.uscourts.gov/" title="United States Court of Appeals for the Federal Circuit">Federal Circuit</a> affirmed-in-part, vacated-in-part, and reversed-in-part a district court&#39;s decision regarding two patents.&nbsp; The district court held the broadest claims of both patents invalid and not infringed, and dismissed claims of inequitable conduct relating to the patents.</p><p>The Federal Circuit affirmed with respect to one patent, but vacated and reversed with respect to the other.&nbsp; Regarding the first patent, the court held there was no genuine issue of material fact that a product embodying all the claim limitations was in public use before the critical date.&nbsp; There was also no genuine issue of material fact that the defendants were licensed under the patent, as the license grant was not limited to use with the plaintiff&#39;s products.</p><p>With regard to the second patent, however, the court held the defendant&#39;s motion for summary judgment of invalidity was not properly supported, and vacated the finding of invalidity.&nbsp; Further, there were insufficient findings in the district court&#39;s summary judgment order to support a finding of noninfringement of the second patent.&nbsp; The court also reinstated the defendant&#39;s claims of inequitable conduct, as not all claims of the patents had been found invalid, making an additional finding of unenforceability not moot.</p><p>More detail of <em>Zenith Electronics Corp. v. PDI Commc&#39;n Sys., Inc.</em> after the jump.</p><p>
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AnticipationPublic useLicensingInequitable conductFederal Circuit casesFri, 18 Apr 2008 08:49:00-0500http://www.Filewrapper.com/index.cfm/2008/4/18/License-under-method-patent-not-limited-to-use-with-licensors-products-absent-express-limitationDenial of injunction against sending letters asserting infringement affirmedhttp://www.Filewrapper.com/index.cfm/2008/4/10/Denial-of-injunction-against-sending-letters-asserting-infringement-affirmed
<p>In a decision Tuesday, the <a href="http://www.cafc.uscourts.gov/" title="United States Court of Appeals for the Federal Circuit">Federal Circuit</a> affirmed the denial of a preliminary injunction seeking to prevent a patentee from representing to the defendant&#39;s customers that the defendant&#39;s product potentially infringed the plaintiff&#39;s patent.&nbsp; The patent at issue had a lengthy and complicated prosecution history that included an interference proceeding.&nbsp; In that proceeding, the <a href="http://www.uspto.gov/web/offices/dcom/bpai/index.html" title="Board of Patent Appeals and Interferences">BPAI</a> ruled another party properly had priority in the invention.&nbsp; The patentee filed an action pursuant to <a href="http://www.law.cornell.edu/uscode/html/uscode35/usc_sec_35_00000146----000-.html" title="35 U.S.C. 146">&sect; 146</a>, and the parties eventually settled, with the party that prevailed at the <a href="http://www.uspto.gov/web/offices/dcom/bpai/index.html" title="Board of Patent Appeals and Interferences">BPAI</a> conceding priority and receiving a license under the patent.&nbsp; In another proceeding in which the patentee was not a party, a district court held that the patentee had abandoned, suppressed, or concealed his invention. </p><p>The defendant argued that because of the issues relating to priority and abandonment, suppression, and concealment (as well as inequitable conduct issues), the plaintiff&#39;s assertions of infringement were in bad faith, and sought an injunction to prevent the plaintiff from representing to the defendant&#39;s customers that its products potentially infringed.&nbsp; The district court rejected this, finding the four-factor test did not warrant an injunction.</p><p>The Federal Circuit affirmed, finding the action not objectively unreasonable, as the case was not so clear-cut to make the district court&#39;s decision an abuse of discretion.&nbsp; However, while the court noted the defendant&#39;s chances on appeal were &quot;slim,&quot; the appeal was not &quot;clearly hopeless,&quot; and declined to award the plaintiff its fees for the appeal.</p><p>More detail of <em>Judkins v. HT Window Fashion Corp.</em> after the jump.</p><p>
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Attorney fees/exceptional casesFederal Circuit casesInequitable conductInjunctionsAbandonment, suppression, and concealmentThu, 10 Apr 2008 09:59:00-0500http://www.Filewrapper.com/index.cfm/2008/4/10/Denial-of-injunction-against-sending-letters-asserting-infringement-affirmedFederal Circuit: And can mean or, if it makes the claim make sensehttp://www.Filewrapper.com/index.cfm/2008/4/8/When-does-and-mean-or--When-the-Federal-Circuit-says-it-does
<p>In a decision last week, the <a href="http://www.cafc.uscourts.gov/" title="United States Court of Appeals for the Federal Circuit">Federal Circuit</a> affirmed a district court&#39;s permanent injunction against a defendant to prevent infringement of a patent.&nbsp; The district court held the patent not invalid and infringed, based in part on a claim construction that construed the word &quot;and&quot; to mean &quot;or.&quot;&nbsp; Specifically, based on the specification and other claims, the court determined such a construction was consistent with the intrinsic evidence.&nbsp; The court also rejected each of the defendant&#39;s affirmative defenses. </p><p> The Federal Circuit affirmed.&nbsp; Turning first to claim construction, the court held &quot;and&quot; can be interpreted to mean &quot;or&quot; in claim language when the specification warrants that construction.&nbsp; In this case, interpreting &quot;and&quot; as requiring both elements would have rendered some dependent claims meaningless, as well as excluded the preferred embodiment from the claims.&nbsp; The court also affirmed the rejection of the affirmative defenses of inequitable conduct, obviousness, enablement.&nbsp; Notably, in discussing the obviousness issue, the court stated:&nbsp; &quot;a flexible TSM test remains the primary guarantor against a non-statutory hindsight analysis such as occurred in this case.&quot;&nbsp; It will be interesting to see whether the non-TSM grounds for an obviousness rejection outlined in the <a href="http://www.uspto.gov/web/offices/pac/mpep/documents/2100_2143.htm#sect2143">USPTO&#39;s examination guidelines</a> will survive scrutiny by the Federal Circuit. </p><p>More detail of <em>Ortho-McNeil Pharm., Inc. v. Mylan Labs., Inc.</em> after the jump.</p><p>
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Federal Circuit casesObviousnessEnablementClaim constructionInequitable conductInjunctionsTue, 08 Apr 2008 17:27:00-0500http://www.Filewrapper.com/index.cfm/2008/4/8/When-does-and-mean-or--When-the-Federal-Circuit-says-it-does